Monday, October 3, 2011

Seeing Red: Professor Susan Scafidi's Insights on the Louboutin v. YSL decision; and Other Highlights of the 10th Annual IP Law Conference at GGU

Fordham Law Professor Susan Scafidi, founder and director of the nonprofit Fashion Law Institute, spoke to an SRO crowd on Friday at the 10th Annual Conference on Recent Developments in IP Law and Policy, presented by the IP Law Center of Golden Gate University. Her topic - the controversial decision by USDC Judge Victor Marrero denying injunctive relief sought by famous shoe designer Christian Louboutin against Yves Saint Laurent America, Inc. for the latter's alleged infringement of Louboutin's signature trademark red soles on its designer shoes. YSL's defense challenged the validity of Louboutin's registered mark. According to Prof. Scafidi, the decision in Louboutin v. YSL, 11 Civ. 2381 (VM) (USDC. SDNY, 8/10/11), is already in the process of being appealed to the Second Circuit.

Judge Marrero's decision is another judicial foray into the dangerous and ill-defined waters of aesthetic functionality, an area of trademark law that confounds many courts and legal scholars. Here, he finds that "in the fashion industry color serves ornamental and aesthetic functions vital to robust competition", leading to his conclusion that the Louboutin trademark, even if the red sole has acquired secondary meaning, should not have been registered, and had this been a motion for summary adjudication, he would have cancelled the registration.

Prof. Scafidi was critical of several key aspects of the decision: she opined that it overlooks and fails to follow key elements of the Supreme Court's decision in Qualitex v. Jacobson, 514 U.S.159 (1995); that it unduly downplays the significance of the acquired distinctiveness and secondary meaning doctrines; that it discouraged trade dress protection across industries; and that it takes the U.S. another step away from harmonization with Europe on this issue.

The question of whether, and in what circumstances, a single color may serve as a valid trademark for goods and services has bedeviled many courts and trademark scholars for years.
It remains to be seen whether, through the appellate process, the dispute of these high end shoe designers will finally provide the platform (an admittedly bad pun) for a court to offer a definitive answer to this question.

Other noteworthy presentations at this years' Conference included Prof. Cynthia Ho (Loyola University Chicago School of Law), who offered fascinating insights into the difficult problems facing diverse stakeholders in the intersection between patent holders and the needs of public health in the global economy. She was candid in her acknowledgment that answers to these issues are hard to find, and offered attendees a cogent analysis of the competing interests. The similarly difficult set of issues involving rights of privacy in personal identity data were the focus of an engrossing presentation by in-house counsel for McKesson (Sharon Anolik) and TrustE (John Tomaszewski). The fast paced world of online gaming was also explored in presentations by Neil Smith (Ropers Majeski), Sharon Zezima (Electronic Arts), Shawn Faust (formerly with Booyah), and Jennifer Lam (Zynga). The Conference kicked off with a timely review of the key features of the America Invents Act, presented by veteran patent attorneys Robert Morrill and Justin Beck.

Planning begins Monday on next year's Conference. Don't miss it! For updates, see